Decision [ZA2011-0098] .ZA ALTERNATE DISPUTE RESOLUTION REGULATIONS (GG29405) APPEAL DECISION CASE NUMBER: ZA2011-0098 DECISION DATE: 22 June 2012 DOMAIN NAME va.co.za THE DOMAIN NAME REGISTRANT: Brandon Davids REGISTRANT’S LEGAL COUNSEL: Traverse Legal/Mr John Di Giacomo THE COMPLAINANT: Lexshell 44 General Trading (Pty) Ltd t/a V&A Waterfront COMPLAINANT’S LEGAL COUNSEL: DLA Cliffe Dekker Hoffmeyr, Inc Mr Eben van Wyk THE 2 nd LEVEL DOMAIN NAME ADMINISTRATOR: UniForum SA (CO.ZA )
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[ZA2011-0098] .ZA ALTERNATE DISPUTE RESOLUTION … · “VA” in the disputed domain name are likely to be pronounced as “V&A”. On this basis, the disputed domain name is identical
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Decision
[ZA2011-0098]
.ZA ALTERNATE DISPUTE
RESOLUTION REGULATIONS
(GG29405)
APPEAL DECISION
CASE NUMBER: ZA2011-0098
DECISION DATE: 22 June 2012
DOMAIN NAME va.co.za
THE DOMAIN NAME REGISTRANT: Brandon Davids
REGISTRANT’S LEGAL COUNSEL: Traverse Legal/Mr John Di Giacomo
THE COMPLAINANT: Lexshell 44 General Trading (Pty) Ltd
t/a V&A Waterfront
COMPLAINANT’S LEGAL COUNSEL: DLA Cliffe Dekker Hoffmeyr, Inc
1.1 The Dispute was filed with the South African Institute of Intellectual
Property Law (the “SAIIPL”) on 25 November 2011.
1.2 The Registrant submitted his Response on 3 January 2012, the due
date.1
1.3 The Complainant submitted its Reply on 10 January 2012, the day on
which it was due, but sought and obtained leave to correct an error in the
wording of paragraph 6.2 The amended Reply was filed on 11 January
2012.
1.4 The SAIIPL appointed Mr Andre van der Merwe as the Adjudicator. He
rendered his decision on 12 April 2012, upholding the Complaint.
1.5 The Registrant filed a Statement of Intention to Appeal on 4 April 2012
and a Notice of Appeal on 2 May 2012. The SAIIPL verified that the
Appeal Notice satisfied the formal requirements of the co.za Alternate
Dispute Resolution Regulations (“the Regulations”) and the SAIIPL’s
Supplementary Procedure.
1.6 In accordance with the Regulations, the SAIIPL formally notified the
Complainant of the appeal on 2 May 2012. The Complainant submitted
its Response on 16 May 2012.
1.7 The SAIIPL appointed Mr Chris Job, Mr GE Morley SC and Ms
Mariëtte du Plessis as the Appeal Panel. The members have submitted
statements of acceptance and declarations of impartiality and
independence as required by the SAIIPL to ensure compliance with the
Regulations and Supplementary Procedure. The presiding adjudicator is
Mr Chris Job.
1 The Registrant did not initially file his full response, but did so later the same day after being notified by 2 The Administrator referred the issue to the Adjudicator, who allowed the amendement on the basis that the error was clearly unintended and the amendment did not change the substance of the Reply.
years, the popularity of the V&A Waterfront as a tourist
destination, and its advertising expenditure in promoting the V&A
Waterfront. The Complainant contends that it expends in excess
of R1.5 million per year on its advertising. The Complainant also
contends that one of its subsidiaries, V&A Waterfront (Pty)
Limited,3 markets and promotes the goods and services of the
Complainant on its website situated at www.waterfront.co.za.
3.1.3 The Claimant therefore has rights in the trade marks V&A and V&A
WATERFRONT within the meaning of Regulation 3(1)(a).
3.1.4 The disputed domain name, va.co.za, is similar to the
Complainant’s V&A trade mark and also its V&A WATERFRONT
trade mark, in that the word “Waterfront” is said to be purely
descriptive. It is not possible to register a domain name
incorporating the ampersand symbol and, therefore, the letters
“VA” in the disputed domain name are likely to be pronounced as
“V&A”. On this basis, the disputed domain name is identical or
similar to the trade marks in which the Complainant has rights, for
purposes of Regulation 3(1)(a).
3.1.5 The disputed domain name, in the hands of the Registrant, is an
abusive registration. In particular, the disputed domain name was
both registered and used in a manner that took unfair advantage
of, or was unfairly detrimental to, the Complainant’s rights.
3.1.6 None of the factors that may indicate that the disputed domain
name is not an abusive registration, in terms of Regulation 5, is
present. On the contrary, a number of factors indicate that the
disputed domain name is an abusive registration. Here the
Complainant relies on the fact that the Registrant’s website was
taken down immediately after he received the Complainant’s letter
3 Annexure “VA 9” to the Complaint, being a Whois search in respect of the domain name waterfront.co.za, indicates that the registrant is Victoria & Alfred Waterfront (Pty) Limited. There is no V&A Waterfront (Pty) Limited amongst the companies named by the Complainant as its subsidiaries. Nothing turns on this error.
contained content from the Complainant’s website and has never
been used in a manner that did not refer directly to the
Complainant (presumably the V&A Waterfront).
3.1.12 By registering and using the disputed domain name, the Registrant
intended to attract internet users to its website and away from the
Complainant. This conduct is abusive in that its takes unfair
advantage of, or is unfairly detrimental to, the Complainant’s
rights.
3.1.13 The disputed domain name was registered primarily with the
intention of blocking the registration of a name or mark in which
the Complainant has rights. The Registrant knew or should have
known that his registration of the domain name would prevent the
Complainant from registering the domain name as its own.
3.1.14 The Complainant concludes that the registration or use of the
domain name takes unfair advantage of the “well-known status of
the Complainant”4 and is unfairly detrimental to the Complainant;
that the Registrant’s infringement of the Complainant’s copyright is
detrimental to the Complainant; and that the conduct of the
Registrant in advertising competing hotels and accommodation
services is also unfairly detrimental to the Complainant’s business.
3.1.15 Accordingly, the disputed domain name should be transferred to it.
3.2 Registrant
The Registrant’s contentions and submissions are summarised below.
3.2.1 The Complainant’s trade mark registrations afford it no statutory
rights in the mark V&A per se, but only in the composite marks, as
registered.
4 It is not clear whether the Complainant intended to refer to its allegedly well-known trade marks or the fame of its property development, but the distinction between the trade marks, on the one hand, and the V&A Waterfront as a location, on the other, is significant in the context of this decision.
internet users with information and reviews concerning
accommodation, events and retail stores located in the geographic
area of the V&A Waterfront.
3.2.8 Finally, there should be a finding of reverse domain name hijacking
on the part of the Complainant in that it knew, or should have
known, that it would be unable to prove that the disputed domain
name was registered in bad faith.
4) Registrant’s Appeal Notice and Complainant’s Response to the Appeal
Notice
4.1 Registrant’s Appeal Notice
In his notice of appeal, the Registrant contents as follows.
4.1.1 The Adjudicator
(i) ignored established legal presedent;
(ii) misapplied South African law and disregarded established
South African presedent; and
(iii) ignored factual evidence contained within the record.
4.1.2 The Adjudicator ignored two foreign decisions in relation to the
first contention.5
4.1.3 On the second ground, the Adjudicator misapplied the decisions in
Century City Apartments v Century City Property Owners
Association 2010 (3) SA 1 (SCA), and Groupe LFE v Swartland
Winery (467/07) [2011] ZASCA 4 (4 March 2011). After quoting
from Century City in his Appeal Notice, the Complainant contends:
‘Similarly, Complainant’s own address is “Victoria and Alfred
Waterfront, Cape Town, South Africa.” The Waterfront contains its
own post office, signs direct the public there, and a person who
5 Atlantic Station, LLC v Dargan Burns III, FA 1250592 (National Arbitration Forum April 26, 2009) and Board of Regents, the University of Texas System v Vertical Axis, Inc., FA 1322040 (National Arbitration Forum June 25, 2010).
intends to dine at the Waterfront will describe the restaurant with
reference to its location. See Exhibit A.’
4.1.4 Apart from the reference to the address of the Complainant, this
submission embodies new evidence and the Panel has to decide on
its admissibility.
4.1.5 Finally, as far as the third ground is concerned, the Adjudicator
made two incorrect findings of fact. Only one of those findings
needs to be dealt with here.6 The important factual finding on
which the Adjudicator is said to have erred is his finding that the
Registrant used V&A as a trade mark because “it is both
memorable and marketable”, whereas the correct position is that
he only registered the domain name for that reason and later
chose to use the domain name for a different reason.
4.2 Complainant’s Response to the Appeal Notice
The Complainant’s Response to the Appeal Notice is now summarised.
4.2.1 In limine, the Registrant’s appeal notice did not contain “detailed grounds
and reasons for the appeal” as required by Regulation 13(b) of the
Supplementary Procedure. The Complainant accordingly was responding
to the Registrant’s appeal notice to the extent that it was able to do so.
4.2.2 The Registrant did not challenge the Adjudicator’s finding that the
disputed domain name is identical or similar to a mark in which the
Complainant has rights. For this reason, the Appeal falls to be decided
purely on whether or not the disputed domain name is an abusive
registration.
6 The other concerned the presence or absence of a disclaimer on the Registrant’s website to the effect that “All trademarks and web sites that appear throughout this site are the property of their respective owners... This site is not affiliated with any government or corporate entity associated with a name similar to the disputed domain name”. The presence or absence of this disclaimer has no bearing on the Panel’s findings and is accordingly ignored.
Town. This explanation differs from (but is not necessarily
inconsistent with) the explanation given in the Registrant’s
attorneys’ letter of 15 July 2011 written in response to the letter of
demand. In that letter, the Registrant’s stated position was simply
that he was entitled to register and use the disputed domain
name, va.co.za, because it was a bona fide description of the V&A
Waterfront as a geographical area. This remains the Registrant’s
primary defence. The Registrant relied on the decision in
weskusmall.co.za [ZA2009-0029] in order to substantiate it.
5.5.5 The Panel has considered the decision in weskusmall.co.za, but
could find no guidance from that decision because the facts of the
matter were distinguishable from those in the present case.
Significantly, the name Weskus (West Coast) (the name of the
area in which the Complainant’s business was located) is
inherently geographically descriptive, whereas the same cannot be
said of the name “V&A”. Secondly, the Complainant in that
complaint produced no evidence of its use of the name WESKUS
MALL as a trade mark. The Adjudicator’s finding that the
Complainant had not established a right in the name or mark
WESKUS meant that she did not need to consider whether or not
the disputed domain name was abusive.
5.5.6 In Century City, the Supreme Court of Appeal had to consider the
appellant’s reliance on Section 34(2)(b) of the Trade Marks Act
194 of 1993 (“the Act”) which, insofar as it is relevant, provides
that “a registered trade mark is not infringed by the use by any
person of any bona fide description or indication of the
geographical origin of his services”.11 The facts in Century City are
similar to those in the present dispute, particularly as the Century
11 Section 34(2):
“A registered trade mark is not infringed by –
(b) the use by any person of any bona fide description or indication of the kind, quality, quantity, intended purpose, value, geographical origin or other characteristics of his goods or services, or the mode or time of production of the goods or the rendering of the services.’
City case also dealt with the question of whether the name
Century City – another one of Cape Town’s
significant landmarks comprising a residential and commercial property
development offering a host of retail, restaurant, accommodation and
entertainment services in one location – was a trade mark or purely a
geographical location.
5.5.7 In Century City, Harms DP held that Section 34(2)(b) of the Trade Marks
Act –
“... represents the other side of the coin of the requirement that
the infringing use has to be trade mark use. A bona fide
description or indication of the geographical origin of an alleged
infringer’s services amounts to non-trade mark use and whether
one considers it as part of the trade mark owner’s cause of action
or as a defence does not make much difference.”
5.5.8 The Appeal Court found that the appellant’s use of its name amounted to
trade mark use and, for that reason, the appellant’s defence under
Section 34(2)(b) of the Trade Marks Act failed. This then required the
Court to consider the appellant’s counter-application for the removal of
the Respondent’s trade mark registrations in terms of Section 10(2)(b) of
the Act. Insofar as it is relevant, the section provides that a mark may
not be registered and a registered trade mark is liable to be removed from
the register if it consists exclusively of a sign or an indication which may
serve, in trade, to designate the geographical origin of the services.12
12 Section 10(2)(b): ‘The following marks shall not be registered as trade marks or, if registered, shall, subject to the provisions of Section 3 and 70, be liable to be removed from the register:
(1) ...; (2) a mark which –
(a) ...; (b) consists exclusively of the sign or an indication which may serve, in trade, to designate the
kind, quality, quantity, intended purpose, value, geographical origin or other characteristics of the goods or services, or the mode or time of production of the goods or of the rendering of the services; ...’.
The proviso reads : ‘provided that a mark shall not be refused registration by virtue of the provisions of paragraph (2) or, if registered, shall not be liable to be removed from the register by virtue of the said provisions if at the date of
5.5.9 After considering the history of Section 10(2)(b), the Appeal Court went
on to consider the question as to when a mark consists exclusively of a
sign or an indication which may serve, in trade, to designate the
geographical origin of the services. It held that –
”Section 10(2)(b) prohibits the registration of geographical names
as trade marks ‘solely where they designate specified geographical
locations which are already famous or are known for the category
of goods or services concerned, and which are therefore
associated with those goods in the mind of the relevant class of
persons’. It also prohibits registration of geographical names that
are likely to be used by undertakings. They ought to remain
available as indications of the geographical origin of the category
of relevant goods or services (Peek & Cloppenburg KG’s
Application [2006] ETMR 33 para 34)”.
5.5.10 The Appeal Court held that Section 10(2)(b) is not concerned with
distinctiveness or its loss13 and, further, that the prohibition is not directed
at protecting trade mark use only, but would also include the situation
where the name may designate the geographical origin of the goods or
services. The word “exclusively” in Section 10(2)(b) means that the
prohibition is directed at a mark that consists purely of a geographical
name without any additional matter. It does not mean that the place
name should have an “exclusively geographical meaning”.
5.5.11 In as much as the domain name va.co.za consists solely of the letters VA,
without additional matter, the disputed domain name would fall within the
ambit of the defence contained in Section 34(2)(b) of the Act if the
Complainant was relying on a registered trade mark. The question that
would remain, then, would be whether the Registrant’s use of the
disputed domain name constitutes trade mark use or bona fide,
the application for registration or at the date of application for removal from the register, as the case may be, it has in fact become capable of distinguishing within the meaning of Section 9 as a result of use made of the mark.’ 13 According to the court, that is dealt with in Section 10(2)(a) and its counterpart, Section 9.